Quick reference guide to significant patent cases heard in Singapore

The Singapore Patents Act (Act) came into force in 1995, and ever since then, there has been a steady stream of patent cases which have clarified some aspects of patent law in Singapore.

Other aspects of patent law which have not been clarified in the Singapore courts will have some guidance provided by the patent examiners’ manual prepared by the Search and Examination Unit of the Intellectual Property Office Of Singapore.

The following list of patent cases provides a quick reference guide to significant patent cases (in the author’s opinion) which have been heard in Singapore in a general chronological order.

The courts agreed that the assessment of inventive step is “a qualitative not a quantitative test”.

With regard to an extent of sufficiency required for a patent specification, the courts have adopted a view that “disclosure of an invention does not have to be complete in every detail, so that anyone, whether skilled or not, can perform it. Since the specification is addressed to the skilled man, it is sufficient if the addressee can understand the invention as described, and can then perform it. In performing the invention the skilled man does not have to be told what is self-evident, or what is part of common general knowledge, that is to say, what is known to persons versed in the art.”

To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly or implicitly in the application.

To do the same in respect of the patent as granted.

To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.

The courts also clarified that “misrepresentation must be material so as to revoke a patent”.

Furthermore, in order to minimise issues during post-grant amendment requests, the courts suggests that “a patentee ought to act expeditiously from the time he discovers the relevant prior art. The patentee seeking leave to amend must satisfy the court, based on the facts and circumstances, that the patentee acted reasonably and without undue delay”.

However, this may not be binding in the future as during proceedings for the case, the issue of whether business methods fall within patentable subject matter was not raised for consideration by the courts.

The courts expressed some scepticism with regard to experts’ testimonies – “one cannot be faulted for taking the views just expressed, with respect to an expert’s duty to the court and to justice, with the proverbial pinch of salt, especially when one views this proposition through the lenses of practical reality.”

The courts highlighted the practice of defining claims scope using actual products to be undesirable, specifically mentioning that “courts should therefore be critical of attempts by patentees to limit, ex post facto, the scope of their patent claims by conflating their actual manufactured products with their patent claims, in order to avoid invalidation on the ground of anticipation by the prior art”.

The courts clarified that “at best, the reasons of the EPO for coming to a particular conclusion may only be said to be of persuasive value to our courts”.

Further clarification in this regard was provided by the courts with the following statement – “for all intents and purposes, decisions of the House of Lords (and now, the UK Supreme Court) continue to bind lower courts, regardless of any EPO decision. Likewise, in the present case, this court continues to be bound by the UOB Court of Appeal decision”.

The courts agree that “patent attorneys with specialisations in relation to certain types of inventions are capable of assisting the court in relation to the disclosures made in patent specifications, on the construction of the ambit of the claims, and on their experience concerning the relevant art”.

The courts did not make a determination of the legitimacy of Swiss-style claims in light of Section 16(3), but instead focussed on the allowability of post-grant amendments from claims of method of medical treatment to Swiss-style claims.

The courts emphasised that an objection based on “additional matter” was not the same as an objection based on “extension of protection”.

The courts concluded that an amendment from a method of treatment claim to a Swiss-style claim did not create or disclose any “added matter”.

The courts gave effect to the words in the Swiss-style claim “in the preparation of a medicament” such that it was necessary to avoid the method of treatment exclusion. However, the courts considered that the manufacture/preparation of a medicament is not an activity which falls within the ambit of method of treatment claims and that the proposed amendments would therefore have the effect of extending the protection conferred by the patent and should not be allowed.

It should be appreciated that Patent Law is continually evolving in Singapore, and as such, readers of this article will be happy to note that this article will be continually updated with new significant patent cases decided by the Singapore courts.